Obviousness (Part II)

How can we argue for the obviousness of a patent?

We must argue that there is "no teaching, suggestions, or motivation to combine the [prior art] references and that the resulting combination of elements would not have been understood to produce predictable results by someone skilled in the art." (Gene Quinn)


Furthermore, it is imperative to show that the prior art references are from different fields in order to strengthen the argument for non-obviousness.


Obviousness used to be tested using the TSM Test:

Testing

Suggestion

Motivation

The test requires the examiner to prove that some suggestion/motivation exists to combine the referenced elements. Now the Graham Analysis is used as the standard in arguing for obviousness in order to maintain a broader, more holistic evaluation of the patent.

Graham factors include:

1. scope and content of prior art
2. level of ordinary skill in the art
3. differences between claimed invention and prior art
4. objective evidence of non-obviousness
• commercial success
• long-felt, unsolved needs
• failure of others